Introduction to Intellectual Property Law & Policy

Question 12

Answer to question 12 says that the fact that Baldwin mark is not famous is the only weakness and that is why that is a good answer. However, my understanding was that famousness was only required for dilution claim under ACPA. So does that mean that ACPA claim will probably succeed but if it is to fail (as the question asks) it would be because the mark is not famous?

Trademark Registration Requirement

Is federal trademark registration with USPTO required to bring an ACPA action. My understanding was that it was not. However USPTO website suggests that registration is required to bring a claim in federal court. Does that mean infrinement / dilution claim only and does not apply to ACPA claims?
Thanks!

Question on sample question (#14-- regarding copyright registration)

Question 14 asks which answer would be Cape Cod's best defense against Baldwin's copyright infringement charges, and the answer is that it was fair use (transformative).
Answer D says "noninfringement-- Baldwin does not have a copyright."
It makes sense that CC can't say it's noninfringement, because it was actually infringement.
But how could Baldwain bring this claim if it has not yet registered its copyright? Wouldn't Cape Cod's defense be that Baldwin cannot yet bring a claim of any sort until it registers?
Thanks!

Exam Q: technology

Just wondering if it's been decided yet whether we'll have access to the Internet during the exam. I know it sounds useless, but like this site for thumbing through the Copyright provisions: http://www.copyright.gov/title17

Q&A Before the Exam

The exam is on Tuesday, May 1, 2007. I will make every effort to answer all questions posted to the blog prior to noon (12 PM) on Monday, April 30.

One complication is that I will be out of the country (in Salzburg, Austria, at a conference) from Friday night, April 27th. I believe I will have internet acess, but one never really knows about these things. Therefore, if you have questions, posting them by noon on Friday, April 27 will ensure that they get answered. Questions posted after noon on the 27th but before noon on the 30th will probably be answered (I will do my best), but I can't guarantee it. Questions posted after noon on the 30th will not be answered.

In any event, I hope that you will post any questions you have to the blog irrespective of my schedule. In past years, students have answered each others' questions (usually quite well, in fact). In that way, the blog discussion can become part of the studying process.

Question & Answer: Trademark Heirarchy

A student recently asked about trademark heirarchy and geographic indicators, particularly in light of the fact that the relevant portions of the Lanham Act, 15 USC 1052, is quite difficult to parse. So here's a (hopefully) concise explanation:

First, as a review, I note again the basic heirarchy of trademarks:

• Generic: unprotectable


• Descriptive: unprotectable, unless secondary meaning is shown


• Suggestive: protectable (inherently distinctive)


• Arbitrary or Fanciful: protectable (inherently distinctive)

Geographic Terms
For geographic terms, note that we studied the registrability of such terms under the Lanham Act, not expressly whether they are protectable as marks. For purposes of your exam, you can assume that registrability = protectability, but you should understand that the common-law and various state laws might have slightly different outcomes.

Here are the three categories of geographic terms, and their registrability (note that the trick here is that you have to read 1052(e) and (f) together):

• primarily geographically descriptive: not registrable, unless secondary meaning is shown [ see 1052(e)(2) + 1052(f) ]


• primarily geographically misdescriptive: registrable, no need to show secondary meaning


• primarily geographically deceptively misdescriptive: not registrable [1052(e)(3) + 1052(f)

Note that under 1052(f), there is an exception allowing registration for primarily geographically deceptively misdescriptive marks that gained secondary meaning prior to December 8, 1993.